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Patent Filing and
Prosecution in India
Insights by Patent Attorney
Filing a patent in India provides
strategic competitive advantage to
companies and business owners
Indian Patent Office (IPO):
e-Filing of Patent Application is
Preferred
Provisional Complete
PCT
International
Phase
PCT
National
Phase
Convention
Application
Patent Application Types
Provisional Patent Application
Define Scope of Invention
Broad Disclosure
Broad Set of Claims (Optional)
Patent Drawings /...
Complete Patent Application
Direct filing or within 12 months of provisional
Full-fledged claims required
Formal Patent Dr...
PCT International Phase Application
Treaty Signed
by 148+
States
Can be filed
directly
Or within 12
months of
priority dat...
PCT International Phase Application
Timeline by WIPO
PCT National Phase Application in India
Within 31
months from
Priority Date
Similar to
Filing
Regional
Patent in India
Eng...
Convention Patent Application in India
India signatory to
Paris Convention
To be filed within 12
months from Priority
Date...
Paris Convention vs. PCT Patent Application
Timeline by WIPO
Patent Prosecution in India
1. Patent
Filing
2. Patent
Publication
3. Patent
Examination
4. First
Examination
Report (FER)...
Patent Prosecution in India
1. PATENT FILING IN INDIA
(Complete Patent, PCT
National Phase or Convention
Application)
2. P...
Patent Prosecution in India
3. PATENT EXAMINATION
(Examiner determines Novelty,
Inventive step & Industrial
Application)
4...
Patent Prosecution in India
5. OFFICE ACTION
RESPONSE
(Applicant is required to
respond to FER within 12
months)
6. GRANT ...
Questions?
Visit www.techlaw.attorney
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Patent Filing and Patent Prosecution in India - Patent Application Types - Provisional & Complete Patent - PCT National Phase & International Phase Application - Patent Publication, Examination and Office Action Response

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Types of Patents

Various types of patent applications can be filed in India, including:

Provisional Patent Application
Complete Patent Application
PCT International Phase Patent Application
PCT National Phase Patent Application
Paris Convention Patent Application
Indian Patent Office follows a well-defined patent prosecution procedure, which includes various deadlines and other documentary requirements. In general, such deadlines mostly begin from the priority date of the patent application.
Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier.

However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.

Patent Examination

After filing a patent in India, a separate request for patent examination via Form 18 is required to be filed with Indian Patent Office. This request can be filed either at the time of filing patent application or anytime within 48 months from the earliest priority date.

Some patent applicants intend to delay patent prosecution process for business reasons as the claimed invention might need some time for being completely embodied as a commercially viable product. Hence, such applicants can take advantage of the 48 months timeline and file the patent examination request after few months / years of the patent filing date.

Alternatively, some patent applicants prefer to expedite the patent examination process by filing such examination request along with the patent application. This combined with a request for early publication can reduce the patent prosecution time period by approx. 18 months.

First Examination Report (FER) or Office Action

The patent examiner examines the contents of patent application to determine novelty, inventive step (non-obviousness) and industrial application. Thereafter, the patent office issues a set of objections generally known as the first examination report (FER) or the office action.

Office Action Response

The patent applicant is required to submit a response to office action (FER) within 12 months of issuance of said office action.

Grant of Patent

After receiving a satisfactory response from the applicant, the examiner grants the patent. In some cases, a hearing may be required. In addition, the examiner can issue further office action after receiving response to FER, which can be responded to by the applicant in a timely manner to proceeds towards grant stage.

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Patent Filing and Patent Prosecution in India - Patent Application Types - Provisional & Complete Patent - PCT National Phase & International Phase Application - Patent Publication, Examination and Office Action Response

  1. 1. Patent Filing and Prosecution in India Insights by Patent Attorney
  2. 2. Filing a patent in India provides strategic competitive advantage to companies and business owners
  3. 3. Indian Patent Office (IPO): e-Filing of Patent Application is Preferred
  4. 4. Provisional Complete PCT International Phase PCT National Phase Convention Application Patent Application Types
  5. 5. Provisional Patent Application Define Scope of Invention Broad Disclosure Broad Set of Claims (Optional) Patent Drawings / Sketches Provides Patent Pending Status
  6. 6. Complete Patent Application Direct filing or within 12 months of provisional Full-fledged claims required Formal Patent Drawings mandatory Detailed description of best mode required
  7. 7. PCT International Phase Application Treaty Signed by 148+ States Can be filed directly Or within 12 months of priority date Main Form to be filled: PCT/RO/101 Competent Search Authority to be selected
  8. 8. PCT International Phase Application Timeline by WIPO
  9. 9. PCT National Phase Application in India Within 31 months from Priority Date Similar to Filing Regional Patent in India English translation required Prosecution begins after 31 months from priority Express Examination can expedite proceedings
  10. 10. Convention Patent Application in India India signatory to Paris Convention To be filed within 12 months from Priority Date English translation required Application treated as Ordinary Patent filed in India
  11. 11. Paris Convention vs. PCT Patent Application Timeline by WIPO
  12. 12. Patent Prosecution in India 1. Patent Filing 2. Patent Publication 3. Patent Examination 4. First Examination Report (FER) 5. Responding to objections 6. Grant of patent
  13. 13. Patent Prosecution in India 1. PATENT FILING IN INDIA (Complete Patent, PCT National Phase or Convention Application) 2. PATENT PUBLICATION (After 18 months of filing date or within 6 weeks of filing request for early publication via Form 9)
  14. 14. Patent Prosecution in India 3. PATENT EXAMINATION (Examiner determines Novelty, Inventive step & Industrial Application) 4. FIRST EXAMINATION REPORT (Examiner issues FER containing set of objections)
  15. 15. Patent Prosecution in India 5. OFFICE ACTION RESPONSE (Applicant is required to respond to FER within 12 months) 6. GRANT OF PATENT (Examiner grants the patent after receiving satisfactory response / hearing)
  16. 16. Questions? Visit www.techlaw.attorney

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